The main legal point established in the judgment is the requirement for thorough consideration of amended claims and legal submissions, particularly in relation to Section 3(k) of the Patents Act, and the need for re-consideration by an unbiased officer.

JUDGMENT

(Prayer: Transfer Civil Miscellaneous Appeal (Patents) filed under Sections 117(A) of the Patents Act, 1970, prays to (1) an order setting aside the impugned order dated October 08,2020 passed by the Respondents; and (2) an order granting a patent on Indian Patent Application No. 2359/CHENP/2010 in favour of the Appellant.)

1. The appellant applied for grant of a patent in respect of a system and method for listening to audio content. The said application was filed on 23.04.2010. Originally, the appellant made 20 claims. The First Examination Report (FER) was issued on 11.08.2016. In the FER, objections were raised. The objections were responded to on 10.02.2017. In order to meet the objections, the appellant amended the claims and submitted 11 amended claims for consideration. Pursuant to a hearing notice dated 13.08.2020, the appellant was heard and the impugned order of refusal was issued on 08.10.2020.

2. Learned counsel for the appellant opened her submissions by pointing out that the European Patent Office granted a patent for this invention. She invited my attention to the original claims, the amended claims and the impugned order. With reference to the impugned order, learned counsel pointed out that only claims 1 to 5 and claims 11 to 14 were objected to. Consequently, it is submitted that the patent should have been granted as regards apparatus claims to which no objections were raised. Learned counsel further submits that the impugned order discloses complete non-application of mind inasmuch as there were only 11 amended claims whereas claims 11 to 14 are referred to in the impugned order. This also reveals that the amended claims were not considered while pronouncing the impugned order.

3. As regards the objections on the ground of Section 3(k) of the Patents Act, 1970, learned counsel submitted that the scope of Section 3(k) is limited to computer programmes per se and that Section 3(k) would not inhibit the grant of patents if a technical solution is provided by deploying computer programmes. In support of these contentions, learned counsel placed for consideration the following judgments:

(i) Ferid Allani v. Union of India and Others, order dated 12.12.2019 in W.P.(C)/2014, particularly paragraphs 10 to 12 thereof (also placed before the Assistant Controller).

(ii) Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, 2023:DHC:3342, particularly paragraphs 39 and 40 thereof.

4. If remanded, learned counsel further submitted that the matter should be heard by an officer other than the officer who passed the impugned order. In support of this submission, learned counsel placed reliance on several judgments, including the following:

(i) Art Screw Co. Ltd. v. The Assistant Controller of Patents and Designs, 2022/DHC/005571.

(ii) Dr.Sapna Nangia

v. The Assistant Controller of Patents and Designs, 2023/DHC/001283.

(iii) Dolby International AB v. The Assistant Controller of Patents and Designs, 2023/DHC/001854.

5. In response to these submissions, Mr.Samivel, learned SPC, relied on Section 3(k) of the Patents Act and contended that a computer programme is not an invention in terms of the Patents Act and that, therefore, the impugned order is in order and does not call for interference.

6. According to Mr.Samivel, neither the original claims nor the amended claims satisfy the requirements for patentability. Without making any concession on the merits of the matter, he submits that the matter may be remanded for re-consideration because the impugned order refers to claims 11 to 14, whereas only 11 amended claims were submitted.

7. The operative part of the impugned order is as under:

“Examiner''s Observation about

1. claims 1 – 5 of the alleged invention discloses a method for listening to audio content, which refers to an algorithm, as it consists of a set of instructions for